There are two types of trademark applications (when filed domestically) in the United States:
- In-use trademarks
- Intent-to-use trademarks.
An in-use trademark application is just what it sounds like. A person (or business) is using a trademark associated with goods and/or services already in use in commerce. For applications filed as being in use, the applicant must be using the mark in the sale or transport of goods or the rendering of services in “interstate” commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country. For goods, the mark must appear on the goods (e.g., tags or labels), the container for the goods, or displays associated with the goods. For services, the mark must be used in the sale or advertising of the services.
If the applicant has not yet used the mark but plans to do so in the future, the applicant may file its trademark application based on a good-faith or bona fide intent to use the mark in commerce. A bona fide intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.
Looking at a recent case, Lincoln National Corporation v. Kent G. Anderson, Opposition Nos. 91192939 and 91194817 (February 21, 2014) [not precedential], the Trademark Trial and Appeal Board gives some guidance as to how to show a bona fide intent to use the applied-for mark in commerce. In this case, Mr. Anderson, the Defendant, applied for several marks with very long lists in his goods/services descriptions (one set of his marks’ descriptions takes a page to list).
This is unacceptable because the USPTO and the Trademark Trial and Appeal Board could find it “highly unlikely” that the applicant would be able to introduce all the services during the pendency of the application. In other words, the applicant must be able to introduce all the goods or services while the application is still open. So that list of goods or services must be realistic.
So, if you want to file for a trademark you are not using, you may. You just need to be able to keep that list of goods or services in your business plan realistic.